Ex Parte Uno et al

Board of Patent Appeals and Interferences

Sep 28, 2010

10109984 (B.P.A.I. Sep. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/109,984 03/28/2002 Koichi Uno 9333/286 7492
74989 7590 09/28/2010
ALPINE/BHGL
P.O. Box 10395
Chicago, IL 60610
EXAMINER
ENGLAND, SARA M
ART UNIT PAPER NUMBER
2179
MAIL DATE DELIVERY MODE
09/28/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KOICHI UNO,
AZUSA KANNO, and HIDEKI ITO
____________

Appeal 2009-007761
Application 10/109,984
Technology Center 2100
____________

Before JOSEPH L. DIXON, THU A. DANG, and STEPHEN C. SIU,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007761
Application 10/109,984

2

The Appellants appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 6-19. Claims 1-5 and 20 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a device for displaying
information corresponding to the recorded audio data being played (Spec. 1).

The Illustrative Claim
Claim 6, an illustrative claim, reads as follows:
6. An audio information display device comprising:

an information data reading unit for reading at least one of
individual title information representing a title of each of a
plurality of audio tracks recorded on an audio recording
medium being played, individual artist information representing
an artist of each audio track, common title information
representing a common title of the plurality of audio tracks, and
common artist information representing a common artist of the
plurality of audio tracks;

a display information selection/output unit for selecting
information from the information data reading unit and
providing the selected information to a display device; and
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a scroll controller for sequentially scrolling characters
representing audio information across the display device, the
sequentially scrolled characters moving from a right side of the
display device to a left side of the display device,

wherein the display information selection/output unit only
displays predetermined specific information when a number of
scrolls required to display the audio information is greater than
or equal to a predetermined number.

The References
The Examiner relies on the following references as evidence:
Greene Jr. US 6,377,925 B1 April 23, 2002
Proehl US 6,690,391 B1 Feb. 10, 2004

The Rejections
The following rejections are before us for review:
Claims 6-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Proehl and Greene.
Only those arguments actually made by the Appellants have been
considered in this decision. Arguments which the Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008).

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II. ISSUE
Has the Examiner erred in finding that the combination of Proehl and
Greene teaches or fairly suggests “a scroll controller for sequentially
scrolling characters representing audio information across the display device,
the sequentially scrolled characters moving from a right side of the display
device to a left side of the display device,” as recited in claim 6?

III. PRINCIPLES OF LAW
Scope of Claim
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bass, 314 F.3d 575, 577
(Fed. Cir. 2002)).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” Id. (quoting In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984)). “Construing claims broadly during
prosecution is not unfair to the applicant . . . because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage.” Id.
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“The PTO's construction here, though certainly broad, is unreasonably
broad. The broadest construction rubric coupled with the term ‘comprising’
does not give the PTO an unfettered license to interpret claims to embrace
anything remotely related to the claimed invention. Rather, claims should
always be read in light of the specification and teachings in the underlying
patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217,
61 S.Ct. 235, 85 L.Ed. 132 (1940).” (In re Suitco Surface, Inc., No. 2009-
1418, 2010 WL 1462294, at *4 (Fed. Cir. 2010).)

Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

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IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Greene
1. Greene discloses an electronic translator that translates input
speech into a text for displaying to a hearing impaired person (Abstract):
FIG. 2 shows a sample display screen 56 for the translator 10,
and illustrates a number of windows that are preferably
provided. More particularly, the display screen 56 includes a
text window 58, an animation/image/phonetic spelling display
window 59, a marquee window 60, a signing window 62 and a
control window 64. The text window 58 is employed to display
text that has been converted by the speech-to-text translator 45.
In addition, the displayed text can be edited and supplemented
through use of the keyboard 30. The animation/image/phonetic
spelling display window 59 is employed to display images or
animations that are associated with highlighted words or
phrases in the text window 58, and also to display the phonetic
spelling of the words. The marquee window 60 is employed to
display a scrolling version (from right to left) of one line of the
text as it is generated by the speech-to-text translator 45, and
includes a pair of buttons 65 to increase or decrease the
scrolling speed.
(col. 6, ll. 13-29, Fig. 2) (Emphases added).

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Proehl
2. Proehl discloses a user interface of a display device that allows
a user to scroll displaying contents such as audio CD tracks through a scroll
cylinder for side-to-side movement (col. 4, ll. 1-56).

V. ANALYSIS
The Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
to the Appellants’ Brief to show error in the proffered reasoned conclusion.
Id.
Grouping of Claims

The Appellants have elected to argue claims 6 and 12 together as a
group (App. Br. 5-7). Therefore, we select independent claim 6 as the
representative claim for this group, and we will address the Appellants’
arguments with respect thereto. 37 C.F.R. § 41.37 (c)(1)(vii). See In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
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35 U.S.C. § 103(a) rejections

We start our review by first determining the appropriate scope of the
argued claim limitations in the independent claims.
First, the claims themselves do not define the argued terms.
Therefore, we have an obligation to construe the terms with broad yet
reasonable interpretations.
Furthermore, in light of the breadth of Appellants’ Specification, we
broadly but reasonably construe the claim limitation “character” as any
character of any language; and the claimed “audio information” as any audio
or sound information because there is no limitation in the claim language to
prevent us from reading the language broadly.
We now address the merits of the Appellants’ contentions under our
claim construction.
With respect to claim 6, the Appellants contend that “neither Proehl
nor Greene teach sequentially scrolling characters representing audio
information from right to left.” (App. Br. 6). According to the Appellants,
“[w]hile Greene may teach sequentially scrolling characters right to left,
Greene fails to teach sequentially scrolling characters representing audio
information right to left.” (Id.) The Appellants further contend that “one
skilled in the art would not have been motivated to combine Proehl and
Greene as contemplated by the Examiner.” (Id.)
We disagree with the Appellants’ contentions. We find that Greene
teaches a speech to text translator with a text widow 58 to display
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text/characters representing speech/audio information from right to left (FF
1). Under our claim construction, the speech input is audio information and
the scrolled text display is clearly representing the audio information (FF 1).
Thus, the teachings of Greene read on the disputed limitation of claim 6.
The Supreme Court noted that an obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S., at 418.
The knowledge that scrolling characters representing the speech information
on the display window is a desirable way to create a way of communication
between a person with impaired hearing and a speaker would have been
within the skill in the art, as evidenced by Greene. We, therefore, find that
combining the well-known elements of scrolling and displaying characters
representing audio information of Greene with the well-known technique of
utilizing an interface to scroll and select audio tracks taught by Proehl (FF 2)
is nothing more than a “predictable use of prior art elements according to
their established functions.” KSR, 550 U.S., at 417.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 6. We also sustain the Examiner’s obviousness rejection of its
dependent claims 7-8, which have not been separately argued, fall with
their base claims. 37 C.F.R. § 41.37 (c)(1)(vii). See In re Nielson, 816
F.2d 1567, 1572 (Fed. Cir. 1987).
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We also sustain the Examiner’s obviousness rejection of
independent claim 12 which contain similar limitations, and the Appellants
present similar arguments thereto. We further sustain the Examiner’s
obviousness rejections of its dependent claims 13-15, which are not
separately argued, and fall with their respective base claims. Id.
With respect to claims 9 and 16, the Appellants contend that “Proehl
fails to teach scrolling characters representing audio information from right
to left across a display device as asserted by the Examiner, and both Proehl
and Greene fails to teach sequentially scrolling characters representing
audio information from right to left across a display device.” (App. Br. 8),
thus, thus, the combination of Proehl and Greene fails to teach the disputed
claim limitations (Id.).
We disagree with the Appellants’ contention. We find this contention
similar to that previously presented in claim 6. As discussed above, we
similarly sustain the Examiner’s obviousness rejection of independent
claims 9 and 16, and the Appellants present similar arguments thereto. We
also sustain the Examiner’s obviousness rejections of their dependent claims
10-11 and 17-19, which are not separately argued, fall with their respective
base claims. Id.
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VI. CONCLUSION
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of the applied references, with Appellants’
countervailing evidence and arguments for nonobviousness and conclude
that the claimed invention encompassed by appealed claims 6-19 would
have been obvious as a matter of law under 35 U.S.C. § 103(a).

VII. ORDER
We affirm the obviousness rejections of claim 6-19 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

tkl

ALPIN/BHGL
P.O.BOX 10395
CHICAGO, IL 60610